NOLA SPICE DESIGNS, L.L.C., Plаintiff-Appellee v. HAYDEL ENTERPRISES, INCORPORATED, doing business as Haydel‘s Bakery, Defendant-Third Party Plaintiff-Appellant RAQUEL DUARTE, Third Party Defendant-Appellee.
No. 13-30918.
United States Court of Appeals, Fifth Circuit.
April 8, 2015.
Jason P. Foote, Esq. (argued), Law Offices of Jason P. Foote, L.L.C., Metairie, LA, for Plaintiff-Appellee and Third Party Defendant-Appellee.
Before KING, GRAVES, and HIGGINSON, Circuit Judges.
STEPHEN A. HIGGINSON, Circuit Judge:
This case concerns the intersection between intellectual property rights and a Mardi Gras tradition. Haydel Enterprises appeals the district court‘s grant of summary judgment to Nola Spice Designs and Raquel Duarte on claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. We affirm.
FACTS AND PROCEEDINGS
During Mardi Gras parades in New Orleans, parade “krewes” throw strands of plastic beads to onlookers, who, in turn, have created “bead dogs” by twisting these strands into the shape of a dog. Haydel Enterprises (“Haydel“) owns Haydel‘s Bakery in New Orleans, which makes and sells pastries and cakes, including its popular king cake sold during the Mardi Gras season. In 2008, Haydel commissioned an artist to design a mascot, which was named “Mardi Gras Bead Dog.” On October 13, 2009, and December 1, 2009, the United States Patent and Trademark Office (“PTO“) issued two trademark registrations to Haydel for, respectively, the phrase “MARDI GRAS BEAD DOG” and its bead dog design. The design consists of a “stylized dog wearing a beaded neck-
In May 2012, Raquel Duarte formed Nola Spice Designs, which sells jewelry and accessories, including necklaces and earrings featuring bead dog trinkets. Duarte twists each bead dog by hand from beads and wire, following the same general method that she used to make bead dogs as a child during Mardi Gras. By cоntrast, the bead dogs in Haydel‘s jewelry are made of sterling silver. Duarte sells her jewelry on the Internet under titles that include the phrase “bead dog,” but not “Mardi Gras bead dog.” The appendix to this opinion contains images of Haydel‘s bead dog sculpture, jewelry, and trademarked design, as well as images of Nola Spice‘s jewelry and of a traditional bead dog trinket.
Haydel learned of Duarte‘s bead dogs through Haydel‘s customers. In August 2012, Haydel sent Nola Spice Designs a letter noting Haydel‘s trademark and copyright in “the bead dog design,” and demanding, inter alia, that Nola Spice Designs “remove from [its] website all display, mention of or reference to the bead dog design,” and “cease any and all promotion, sale, and/or use” of materials incorporating the bead dog design. In October 2012, Nola Spice Designs filed a complaint against Haydel seeking (1) a declaratory judgment that Nola Spice Designs‘s activities do not violate the
On August 28, 2013, the district court granted in part and denied in part the motion for summary judgment filed by Nola Spice Designs and Duarte (collectively, “Nola Spice“) and denied Haydel‘s motion for summary judgment. Specifically, the district court granted summary judgment to Nola Spice on its claim for a declaratory judgment that it was not infringing Haydel‘s trademarks, and the court cancelled those trademarks as unprotectable, but it denied Nola Spice‘s motion for summary judgment on its LUTPA claims. The district court also granted summary judgment to Nola Spice on Haydel‘s claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel timely appealed the district court‘s August 28 order. Nola Spice
STANDARD OF REVIEW
We review de novo a district court‘s grant of summary judgment, Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir.2009), applying the same standard as the district court, Gowesky v. Singing River Hosp. Sys., 321 F.3d 503, 507 (5th Cir.2003). Summary judgment is appropriate “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
DISCUSSION
I. Trademark Infringement
Trademark infringement claims are governed by the Lanham Act,
any word, name, symbol, or device, or any combination thereof ... used by a person ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
To be legally protectable, a mark must be “distinctive” in one of two ways. Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir.2008). First, a mark is inherently distinctive if its intrinsic nature serves to identify a particular source.... Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210-11 (2000) (internal quotation marks, citations, and alterations omitted). The registration of Haydel‘s marks with the PTO is prima facie evidence that the marks are inherently distinctive. See Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 237 (5th Cir.2010);
A. Word Mark
To assess the distinctiveness of a word mark, our circuit relies on the spectrum set forth by Judge Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). Abercrombie divided marks into five categories: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. Id.2 While suggestive, arbitrary, and fanciful marks are inherently distinctive, generic marks cannot be distinctive, and descriptive marks are distinctive only if they have acquired “secondary meaning.” Sugar Busters LLC v. Brennan, 177 F.3d 258, 268 (5th Cir.1999). In categorizing a term, we must examine the context in which the term is used. Union Nat‘l Bank of Tex., Laredo v. Union Nat‘l Bank of Tex., Austin, 909 F.2d 839, 847 (5th Cir.1990). We consider “how [the term] is used with other words,” “the products or services to which it is applied,” and “the audience to which the relevant product or service is directed.” Id. “[T]he question is, ‘What do the buyers understand by the word for whose use the parties are con-
“A generic term is the name of a particular genus or class of which an individual article or service is but a member.” Amazing Spaces, 608 F.3d at 241 (citation omitted); see also Schwan‘s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974 (8th Cir.2006) (“A generic term ... refers to the common name or nature of the article.“). “The test for genericness is whether the public perceives the term primarily as the designation of the article.” Soc‘y of Fin. Exam‘rs v. Nat‘l Ass‘n of Certified Fraud Exam‘rs Inc., 41 F.3d 223, 227 (5th Cir.1995) (internal quotation marks, citation, and alterations omitted).
The record evidence, read in the light most favorable to Haydel, demonstrates that the term “Mardi Gras Bead Dog” refers to the figure of a dog made from Mardi Gras beads. David Haydel, Jr., testified that “[b]ead dog, beaded dog, a dog made of beads are all common terms for describing” a dog made from Mardi Gras-style beads. Dawn Turner, a Louisiana resident, submitted an affidavit stating that she has “childhood memories of making handmade bead dogs from broken Mardi Gras beads.” Similarly, Mary-Clare Manson stated in an affidavit that at Mardi Gras parades, her daughter learned from other children “how to twist the broken beads into the shape of a dog, which we have called bead dogs for many years.” Although these trinkets are sometimes described as “bead dogs” and not “Mardi Gras bead dogs,” Philip Weddle, the artist who created Haydel‘s bead dog design, agreed at his deposition that the terms “Mardi Gras” and “bead dog” “naturally go together:” “You know, it‘s a bead dog. It‘s kind of hard ... not [to] put them together, Mardi Gras.” Indeed, the Copyright Office, in response to Haydel‘s application for a copyright registration in its bead dog design, noted that “Mardi Gras bead dogs ... have apparently become well-known and traditional parts of Mardi Gras.” The record evidence thus makes clear that the relevant public—those familiar with Mardi Gras traditions—perceives the term “Mardi Gras bead dog” primarily to refer to a dog made of Mardi Gras beads. However, Haydel does not sell dogs made of Mardi Gras beads. Rather, Haydel sells silver jewelry in the shape of bead dogs, clothing with the image of a bead dog, and king cakes containing or accompanied by bead dog figurines.3 On this record, therefore, the term “Mardi Gras Bead Dog” describes a characteristic
The district court nevertheless properly classified Haydel‘s mark as descriptive. “A descriptive term identifies a characteristic or quality of an article or service, such as its color, odor, function, dimensions, or ingredients.” Amazing Spaces, 608 F.3d at 241 (citation omitted). “Examples of descriptive marks would include Alo with reference to products containing gel of the aloe vera plant and Vision Center in reference to a business offering optical goods and services.” Id. We have noted that “the concept of descriptiveness must be construed rather broadly.” Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 792 (5th Cir.1983) (intеrnal quotation marks, alteration, and citation omitted), abrogated on other grounds by KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 (2004). A central inquiry to assess descriptiveness is the “imagination test,” which “seeks to measure the relationship between the actual words of the mark and the product to which they are applied.” Id. “If a word requires imagination to apply it to the product or service in question, it tends to show that the term as used is suggestive. On the other hand, if the word conveys information about the product, it is descriptive.” Union Nat‘l Bank of Tex., 909 F.2d at 848.
The record makes clear that the phrase “Mardi Gras Bead Dog” conveys information about Haydel‘s clothing, jewelry, and king cake. The bead dog design embodied in each of these products is, in Haydel‘s words, a “rendering of the old time bead dog.” In addition, Haydel‘s own public statements closely link these products to the traditional Mardi Gras bead dog. Haydel advertises its clothing on its website as “Mardi Gras Bead Dog parade gear,” next to a description of the Mardi Gras tradition of twisting beads into the shape of a dog. Likewise, Haydel advertises its jewelry as a way to “[s]how your Mardi Gras spirit year round.” Fleurty Girl, which sells Haydel‘s jewelry pursuant to a license, published the following advertisement: “In New Orleans, you can twist your Mardi Gras beads a certain number of ways and make what we call a Bead Dog. Now available for the first time ever in sterling silver.” These statements make clear that the bead dog image is a central aspect of Haydel‘s clothing and jewelry. Similarly, the use of “Mardi Gras bead dog” in connection with king cake, a popular Mardi Gras tradition, conveys information about the bead dog figurine inside or accompanying the king cake. No reasonable juror could find that imagination is required to link Haydel‘s clothing, jewelry, and king cake to the phrase “Mardi Gras bead dog,” as Haydel uses that phrase.
A second test to determine descriptiveness is “whether competitors would be likely to need the terms used in the trademark in describing their products.” Zatarains, 698 F.2d at 793 (internal quotation marks and citation omitted). An article in a magazine published by Haydel describes the traditional bead dog as “a fond memory of Mardi Gras’ past and symbol of the City‘s youth.” Another magazine article refers to the traditional bead dog as “an iconic Mardi Gras symbol.” Given the bead dog‘s popularity and its close connection to Mardi Gras, common sense indicates that other vendors would need to use the term “Mardi Gras bead dog” to describe their own Mardi Gras-themed clothing, accessоries, and baked
In response to compelling evidence of descriptiveness, Haydel fails to identify evidence raising a genuine factual issue as to the word mark‘s inherent distinctiveness. Haydel argues that its word mark must be suggestive as applied to jewelry because Nola Spice conceded in its motion for summary judgment that “Haydel does not make and sell bead dogs.” However, that statement at most reflects that the phrase “Mardi Gras bead dog” is not generic as applied to Haydel‘s merchandise. Indeed, other phrases conveying a product‘s shape have been found to be descriptive. See Vox Amplification Ltd. v. Meussdorffer, No. 13-4922, 2014 WL 558866, at *6 (E.D.N.Y. Feb. 11, 2014) (“‘Teardrop[,]’ ... used in conjunction with a teardrop-shaped instrument body, is clearly descriptive.“), adopted, 50 F.Supp.3d 355 (E.D.N.Y.2014); In re Carlson Dolls Co., 31 U.S.P.Q.2d 1319, 1994 WL 380727, at *2 (T.T.A.B.1994) (finding that the name “Martha Washington” is descriptive of a doll intended to represent the historical figure Martha Washington).
Also unpersuasive is Haydel‘s argument that its word mark is arbitrary as applied to clothing and king cake. Arbitrary marks “bear no relationship to the products or services to which they are applied.” Amazing Spaces, 608 F.3d at 241 (citation omitted); see also Union Nat‘l Bank of Tex., 909 F.2d at 845 (“[T]he term ‘arbitrary’ refers to ordinary words which do not suggest or describe the services involved.“). Haydel notes that “Apple” is commonly described as an arbitrary mark in connection with computers, even though an Apple computer displays the image of an apple. See Sport Supply Grp., Inc. v. Columbia Cas. Co., 335 F.3d 453, 460 n. 7 (5th Cir.2003). However, a mark‘s categorization under the Abercrombie typology depends on the context in which it appears and on the nature of the products sold. See Union Nat‘l Bank of Tex., 909 F.2d at 847. Apple Computer sells electronic products, which bear no relationship to the fruit. By contrast, Haydel‘s public statements make clear that it is marketing Mardi Gras-related merchandise; the bead dog image on its clothing and the bead dog figurine inside or accompanying its king cake are part of and describe the product being sold. No reasonable juror could therefore conclude that the phrase “Mardi Gras bead dog” “bear[s] no relationship” to Haydel‘s clothing and king cake. Amazing Spaces, 608 F.3d at 241 (citation omitted). Because the record compels the conclusion that Haydel‘s word mark is descriptive as applied to jewelry, clothing, and king cake, the mark is legally protectable as a source identifier only if it has acquired secondary meaning, which we discuss below.
B. Design Mark
We now analyze the distinctiveness of Haydel‘s design mark, which the PTO defined as “a stylized dog wearing a beaded necklace, with the dog being formed by a series of spheres designed to look like Mardi Gras style beads. The dog has two eyes and a nose, all formed by smaller beads.”
While the Abercrombie test determines the inherent distinctiveness of word marks, we recently embraced the Seabrook Foods test to determine the inherent distinctiveness of a design mark, although we did not “go so far as to hold that the Abercrombie test is eclipsed every time a mark other than a word is at issue.” Amazing Spaces, 608 F.3d at 243. To
[1] whether it was a “common” basic shape or design, [2] whether it was unique or unusual in a particular field, [3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or [4] whether it was capable of creating a commercial impression distinct from the accompanying words.
Id. at 232 (quoting Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A.1977)).4 We have noted that “[t]he first three of the Seabrook Foods ‘questions are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origin—a trademark.‘” Id. at 243-44 (internal quotation marks omitted) (quoting I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 40 (1st Cir.1998) (quoting 1 McCarthy on Trademarks § 8:13)). If not, then the mark is not inherently distinctive and is protectable only upon a showing of secondary meaning. Id. at 247. We have also found useful the following language from the Restatement: “The manner in which a symbol or design is used ... is relevant to the likelihood that it will be perceived as an indication of source. In some instances a design is likely to be viewed as mere ornamentation rather than as a symbol of identification.”
We measure the distinctiveness of a design mark with reference to the market in which the mark is used, although uses beyond that market are also relevant. See Amazing Spaces, 608 F.3d at 245 n. 18 (framing the inquiry as whether the design mark “identifies and distinguishes Amazing Spaces‘s self-storage services from others’ self-storage services,” while noting that “[t]his does not mean ... that we must blind ourselves to uses beyond the self-storage services industry“). In evaluating distinctiveness, our circuit and other courts have considered evidence of third-party use of similar marks. See id. at 232 (noting that “the same or a similar five-pointed star was used in commerce in at least 63 different industries and businesses on buildings, property, and as part of logos and on the buildings of аt least 28 other self-storage locations” (internal quotation marks and citation omitted)); see also Seabrook Foods, 568 F.2d at 1345 (noting “evidence of third-party uses and registrations of similar marks on frozen foods, indicating that Seabrook‘s ‘oval’ design is not unique in this field“); Wiley v. Am. Greetings Corp., 762 F.2d 139, 142 (1st Cir.1985) (applying Seabrook Foods and affirming a grant of summary judgment on a common
To prevail on summary judgment, Nola Spice must offer sufficient evidence both to overcome the presumption of inherent distinctiveness that accompanies Haydel‘s registration, and to compel the conclusion that Haydel‘s design mark is not inherently distinctive as a matter of law. See Amazing Spaces, 608 F.3d at 234. A first step is to define the relevant market. Haydel defines the relevant market as one for pastries, clothing, and jewelry, while Nola Spice argues that the market is one for “bead dogs.” We believe the market is appropriately defined as one for Mardi Gras-themed products. This definition is consistent with advertising of Haydel‘s products, which makes clear that Haydel is selling Mardi Gras-themed merchandise to an audience familiar with Mardi Gras traditions. See generally A.J. Canfield Co. v. Honickman, 808 F.2d 291, 303 (3d Cir.1986) (recognizing the importance of consumer understanding to determining the relevant product genus). Haydel describes its clothing as “Mardi Gras Bead Dog parade gear.” Haydel‘s jewelry is advertised as a traditional bead dog cast in sterling silver, and as a way to “[s]how your Mardi Gras spirit year round.” As Haydel acknowledges, king cake is also a Mardi Gras tradition. We therefore must consider whether Haydel‘s bead dog design is “so unique, unusual or unexpected” in the market for Mardi Gras-themed merchandise that it “will automatically be perceived by customers as an indicator of origin.” Amazing Spaces, 608 F.3d at 243-44. We may also consider uses of bead dog designs beyond that market, given that a “[c]ommonplace ... design[‘s] appearance on numerous products makes it unlikely that consumers will view [it] as distinctive of the goods or services of a particular seller.”
The record is replete with evidence that Haydel‘s design is substantially similar to the traditional bead dog that parade-goers have long crafted from Mardi Gras beads. Haydel describes its design mark as “a rendering of the old time bead dog, jazzed up for the 21st century.” In its application for a coрyright registration for its bead dog design, Haydel acknowledged that the image “brings to mind the traditional bead dog.” Indeed, David Haydel, Jr. testified that every bead dog that could be made would “look like” Haydel‘s trademarked design. Ryan Haydel likewise testified that there was not “any other way to make a bead dog” besides Haydel‘s bead dog design. An article published in the magazine Rally to Rescue describes Haydel‘s design mark as taking “the form of an iconic Mardi Gras symbol: the bead dog.” In addition to these statements, the record contains various images of traditional bead dogs that are similar to Haydel‘s design. These include a photograph of a bead dog trinket on an artist‘s weblog; a photograph of a bead dog crafted by Duarte from Mardi Gras-style beads during her deposition, which Haydel acknowledges is a traditional bead dog trinket; and still shots from a YouTube.com video, titled Boudreaux the BeadDog, featuring a cartoon bead dog.
Haydel argues that its design is distinct from a traditional bead dog because its design has eyes, a nose, a tail, and a necklace. However, the cartoon in Boudreaux the BeadDog also has eyes, a nose and a tail. Other images in the record
C. Secondary Meaning
“Secondary meaning occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the prоduct rather than the product itself.” Id. at 247 (internal quotation marks and citations omitted). In other words, “[t]he mark must denote to the consumer a single thing coming from a single source to support a finding of secondary meaning.” Zatarains, 698 F.2d at 795 (internal quotation marks and citation omitted). The district court found that even if Haydel‘s word and design marks were descriptive and not generic, there was no factual issue as to whether these marks had acquired secondary meaning.
Because Nola Spice has demonstrated that Haydel‘s marks are descriptive, rebutting the presumption of inherent distinctiveness arising from Haydel‘s registrations, Haydel bears the burden of establishing secondary meaning at trial. See Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 567 (5th Cir.2005) (“Registration is prima facie proof that the registered mark is distinctive. However, this presumption can be overcome by showing that the mark is merely descriptive. The burden then shifts to the registrant to prove that its mark has secondary meaning.” (citations omitted)); Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 12 n. 9 (5th Cir.1974) (noting that where the mark was descriptive at most, but registration appeared to have been based on a finding of arbitrariness, the burden of showing secondary meaning rested with the putative mark holder), abrogated on other grounds by B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. 1293 (2015); 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 747 F.2d 81, 88 n. 8 (2d Cir.1984) (“We hold ... that in the absence of evidence that the Patent and Trаdemark Office registered the mark because of its secondary meaning,
(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant‘s intent in copying the trade dress [or mark].
Amazing Spaces, 608 F.3d at 248 (internal quotation marks and citation omitted). “While none of these factors alone will prove secondary meaning, in combination they may establish the necessary link in the minds of consumers between a product and its source.” Zatarains, 698 F.2d at 795. Although secondary meaning is a question of fact, summary judgment may be upheld if the record “cоmpels the conclusion that the movant is entitled to judgment as a matter of law.” Smack Apparel, 550 F.3d at 474; Amazing Spaces, 608 F.3d at 248-50 (affirming grant of summary judgment where plaintiff failed to raise a genuine issue of fact on secondary meaning).
As to the first factor for assessing secondary meaning, Haydel began using its marks in October 2008, when it placed a statue of its mascot in front of its bakery, three-and-a-half years before Nola Spice began selling bead dog jewelry. Haydel began using its marks in connection with the sale of jewelry, clothing, and king cake in April 2009. This duration of use is relatively brief and does not alone raise a factual issue for trial with respect to secondary meaning. See Amazing Spaces, 608 F.3d at 248 (finding an absence of secondary meaning, as a matter of law, where the mark was used for ten years); Bank of Tex. v. Commerce Sw., Inc., 741 F.2d 785, 788 (5th Cir.1984) (finding an absence of secondary meaning despite nine years of use, and noting that “[a]lthough one party may have been successful in imbuing a name with secondary meaning in three short years, that does not mean that length of time alone is sufficient to establish secondary meaning“). As for sales volume, Haydel‘s financial records reflect that it sold bead dog-related items worth approximately $30,500 between January 2007 and May 2013. These sales include approximately 80 clothing items and 300 jewelry items. The record does not reflect the number of king cakes that Haydel sold in connection with its marks. Haydel‘s sales are low compared to the sales of products bearing marks that we have found to have secondary meaning. See Zatarains, 698 F.2d at 795-96 (holding that the district court‘s finding of secondary meaning was not clearly erroneous where Zatarain‘s sold 916,385 cases of Fish-Fri between 1964 and 1979); Smack Apparel, 550 F.3d at 472, 478 (affirming summary judgment to mark holders on secondary meaning where recent sales of products bearing the marks exceeded $93 million).
With respect to the third factor, the “amount and manner of advertising,” David Haydel, Sr. stated in an affidavit that Haydel spent more than $594,000 between October 2008 and August 2013 on “the development and promotion and expanding the use” of Haydel‘s bead dog mascot. However, David Haydel did not specify how much of this money was spent on the “development” of the mascot, which may not have affected public perception of the mark. As for promotion and advertising, “spending substantial amounts of money does not of itself cause a mark or trade dress to acquire secondary meaning.”
The Paws on Parade exhibit has little probative value on the question of secondary meaning. The statues do not feature the word mark “Mardi Gras Bead Dog.” Although the statues embody Haydel‘s design mark, the record does not raise an inference that the exhibit led the consuming public to associate that mark with a single source. See Zatarains, 698 F.2d at 795. In evaluating the effectiveness of advertising, we have considered the context in which the mark appears. Sеe Amazing Spaces, 608 F.3d at 248-49. Haydel‘s name on the plaque is no more prominent than names of other people and organizations involved in the exhibit. In addition, David Haydel, Jr. conceded that a person could read the plaques only by approaching the sculptures, and not from a moving vehicle. Two Nola Spice customers stated that that they had seen the Paws on Parade statues or photos of these statues, and that they had not known that these statues “were associated with Haydel‘s Bakery or any store or artist in particular.” One of the customers stated that she “thought it was simply a Mardi Gras themed art project.” The exhibit‘s short duration further limits its potential effect. See Test Masters Educ. Servs. v. Singh, 46 Fed.Appx. 227, 2002 WL 1940083, at *4 (5th Cir.2002) (per curiam) (noting that “[t]he probative value of advertising depends on the presence of data regarding its reach, frequency, and duration“).
Haydel‘s promotional efforts also include the placement, beginning in October 2008, of one or two bead dog statues outside its bakery, atop a pedestal that reads “Haydel‘s Mardi Gras Bead Dog.” David Haydel, Jr. testified that “hundreds of people” take pictures with the bead dog statue every day. However, there is no evidence that the sculptures led consumers to associate the design and word marks only with Haydel or another single source. See Amazing Spaces, 608 F.3d at 248 (“In considering th[e] evidence [of secondary meaning], the focus is on how it demonstrates that the meaning of the mark or trade dress has been altered in the minds of consumers.” (quoting Pebble Beach Co., 155 F.3d at 541)). Indeed, Haydel‘s inclusion of its own name before “Mardi Gras Bead Dog” on the pedestal suggests a generic use of that phrase. See 2 McCarthy on Trademarks § 15:52 (“Use of a term in its descriptive sense or in a non-trademark sense is not evidence of secondary meaning.” (footnotes omitted)); see also E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 200 (3d Cir. 2008) (finding that use of the phrase “Palmer‘s Cocoa Butter Formula” was not
Press coverage of Haydel‘s marks, the fourth factor in the analysis of secondary meaning, is also slim. Two short online articles about Paws on Parade include photographs of the statues and mention that Haydel provided the mold. Haydel‘s magazine Mambo Beat and a magazine titled Rally to Rescue published longer articles that describe Paws on Parade and include Haydel‘s design and word marks, but there is no evidence of these magazines’ circulation or of their impact on public perception. Haydel does not identify any evidence of third-party media coverage of its marks in connection with clothing, jewelry, or king cake.
Haydel argues that Nola Spice‘s intent in copying Haydel‘s marks supports a finding of secondary meaning. However, Nola Spice did not use Haydel‘s word mark, “Mardi Gras Bead Dog.” As for Haydel‘s design mark, Haydel‘s discussion of secondary meaning does not identify evidence it believes demonstrates Nola Spice‘s intent to copy that mark. Elsewhere in its briefs, Haydel points to evidence that Duarte briefly posted images of statues from the Paws on Parade exhibit on Nola Spice‘s webpages on Facebook.com, Pinterest.com, and Twitter.com. However, the record does not support an inference that Duarte knew Haydel provided the mold for these statues, or that she intended to copy Haydel‘s design in crafting her bead dog jewelry. With respect to the remaining factors, Haydel does not offer any consumer testimony or survey evidence. While survey evidence is not required to establish secondary meaning, it is “the mоst direct and persuasive way of establishing secondary meaning.” Amazing Spaces, 608 F.3d at 248 (quoting Zatarains, 698 F.2d at 795). We have cited one scholar‘s observation that “in a borderline case where it is not at all obvious that [a] designation has been used as a mark, survey evidence may be necessary to prove trademark perception.” Id. at 249 (citing 1 McCarthy on Trademarks § 3:3).
In light of the above factors, we agree with the district court that Haydel failed to raise a fact issue as to whether its design
II. Cancellation of Trademark Registrations
A court may cancel the registration of a trademark that it determines is not distinctive. See
III. Unfair Competition
The district court granted summary judgment to Nola Spice on Haydel‘s counterclaim of false designation of origin in violation of Section 43(a) of the Lanham Act, which prohibits certain types of unfair competition.
uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person....
IV. Trademark Dilution
The district court granted summary judgment to Nola Spice on Haydel‘s counterclaims for trademark dilution under the Lanham Act and Louisiana law. The Lanham Act, as amended by the Trademark Dilution Revision Act, provides, in relevant part,
the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner‘s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
Louisiana‘s anti-dilution statute provides:
Likelihood of injury to business reputation or of dilution of the distinctive quali-
ty of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.
V. Copyright Infringement
“To prove copyright infringement, a plaintiff must establish (1) ownership of a valid copyright; (2) factual copying; and (3) substantial similarity.” Armour v. Knowles, 512 F.3d 147, 152 (5th Cir.2007) (per curiam). As to the first element, Haydel obtained a certificate of a copyright registration for its work titled “Bead Dog,” in the form of “photograph(s), jewelry design, 2-D artwork, [and] sculpture.” The Copyright Act provides that a certificate of copyright registration “made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright.”
The district court relied on the merger doctrine in granting summary judgment to Nola Spice on Haydel‘s copyright infringement claim. The merger doctrine is based on the statutory prohibition against copyright protection for ideas. See
While the question of substantial similarity “typically should be left to the factfinder, summary judgment may be appropriate if the court can conclude, after viewing the evidence and drawing inferences in a manner most favorable to the nonmoving party, that no reasonable juror could find substantial similarity.” Peel & Co. v. Rug Mkt., 238 F.3d 391, 395 (5th Cir.2001) (footnote omitted). To assess substantial similarity, we have often cited the following test: “[A] side-by-side comparison must be made between the original and the copy to determine whether a layman would view the two works as ‘substantially similar.‘” Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir.1997) (per curiam) (footnote omitted). However, where the copyrighted work contains unprotectable elements, the first step is to distinguish between protectable and unprotectable elements of the copyrighted work. See Peel & Co., 238 F.3d at 398 (holding that the district court erred in failing to identify the original constituent elements of the copyrighted design before comparing the two works); Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 533-34 (5th Cir.1994) (“To determine the scope of copyright protection in a close case, a court may have to filter out ... unprotectable elements of plaintiff‘s copyrighted materials to ascertain whether the defendant infringed protectable elеments of those materials.“); see also Feist Publ‘ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (describing an element of infringement as the “copying of constituent elements of the work that are original“). The next inquiry is whether the allegedly infringing work bears a substantial similarity to the protectable aspects of the original work. See Peel & Co., 238 F.3d at 398 (“To support a claim of copyright infringement, the copy must bear a substantial similarity to the protected aspects of the original.“). This determination should be based on the perspective of a “layman” or “ordinary observer.” See id. (“[A] layman must detect piracy without any aid or suggestion or critical analysis by others.” (internal quotation marks and citation omitted)). Our precedents also support consideration of the importance of the copied protectable elements to the copyrighted work as a whole. Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357, 373 n. 12 (5th Cir.2004), abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); Eng‘g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1343 (5th Cir.1994).6
Applying these principles to Haydel‘s claim, we first identify the unprotectable elements in Haydel‘s bead dog design, which is manifested most clearly in sculpture form. Haydel concedes that its bead dog design is a “derivative” work, meaning that it is “based upon one or more preexisting works.”
We now compare Nola Spice‘s bead dog to the protectable elements of Haydel‘s bead dog, assuming the perspective of an ordinary observer and considering the significance of the protectable elements to Haydel‘s work as a whole. See Peel & Co., 238 F.3d at 398; Eng‘g Dynamics, Inc., 26 F.3d at 1343. Haydel argues that only some of Nola Spice‘s bead dogs are infringing and identifies examples in the record. Focusing on the protectable elements of Haydel‘s design, the similarity between Nola Spice‘s and Haydel‘s bead dogs is the expression of the collar as a ring of small spheres. As for the differences, the torso of Haydel‘s bead dog has three spheres, while the torso of Nola Spice‘s bead dog has one sphere. The spheres that make up Haydel‘s bead dog аre pressed together, whereas visible wire connects the spheres that make up Nola Spice‘s bead dogs. Whereas the tail of Haydel‘s bead dog consists of two spheres and no wire, the tails of Nola Spice‘s bead dogs include a curled wire, either alone or atop one or two spheres. Likewise, the noses of Nola Spice‘s bead dogs include a
Because the idea of a collar is unprotectable, only its expression as a string of spheres is relevant to the analysis of substantial similarity. As a threshold matter, we question whether using bead-shaped spheres for a bead dog‘s collar is sufficiently original to merit copyright protection. See Feist Publ‘ns, Inc., 499 U.S. at 348 (“[C]opyright protection may extend only to those components of a work that are original to the author.“). Although the requirement of originality demands only a “creative spark, no matter how crude, humble or obvious,” the level of creativity must be more than “trivial.” Id. at 345, 359 (internal quotation marks and citation omitted). Even if a bead-shaped collar possesses the requisite creative spark, its minimal originality counsels against a finding of substantial similarity. See Harney v. Sony Pictures Television, Inc., 704 F.3d 173, 187 (1st Cir.2013) (“[L]ocating the subject of a photograph in the middle of a frame is an element of minimal originality and an insufficient basis, without more, to find substantial similarity.” (internal quotation marks omitted)). In addition, the collar is both qualitatively and quantitatively insignificant in relation to Haydel‘s work as a whole, which is designed to represent a traditional bead dog trinket and is dominated by unprotectable elements. Sеe Positive Black Talk Inc., 394 F.3d at 373 n. 12 (noting other circuits’ support for the proposition that the substantial similarity analysis should consider the qualitative and quantitative importance of the copied material to the plaintiff‘s work as a whole); Eng‘g Dynamics, Inc., 26 F.3d at 1343 (noting that the goal of the comparison step is to “determine whether the defendants have misappropriated substantial elements of the plaintiffs” work (citing Gates Rubber Co., 9 F.3d at 834) (emphasis added)). In light of these considerations, no reasonable jury could find substantial similarity based solely on Haydel‘s expression of a collar.
Haydel argues that the “best evidence” of substantial similarity consists of statements by the Haydel family that its customers were confused about the relationship between Nola Spice‘s bead dogs and Haydel‘s mascot. Haydel points to a sworn statement by David Haydel, Sr. that he “personally heard several customers of Haydel‘s Bakery asking whether Nola Spice Designs sells Haydel‘s MARDI GRAS BEAD DOG jewelry and telling our staff that they (the customers) believed that Nola Spice Designs sold Haydel‘s MARDI GRAS BEAD DOG jewelry.” This vague allegation of consumer confusion by a self-interested party possesses little probative value. Cf. Filipino Yellow Pages, Inc. v. Asian Journal Publ‘ns, Inc., 198 F.3d 1143, 1152 (9th Cir.1999) (finding that “vague,” “self-interested” testimony by the founder of the plaintiff company,
VI. Louisiana Unfair Trade Practices Act
The Louisiana Unfair Trade Practices Act (“LUTPA“) prohibits “[u]nfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce.”
CONCLUSION
For the above reasons, we AFFIRM the district court‘s grant of summary judgment to Nola Spice on its claim for a declaratory judgment of non-infringement of Haydel‘s trademarks, and we AFFIRM the district court‘s cancellation of those trademarks. We also AFFIRM the district court‘s grant of summary judgment to Nola Spice on Haydel‘s claims of trademark infringement, unfair competition, and trademark dilution under the Lanham Act; trademark dilution under Louisiana law; copyright infringement under the Copyright Act; and unfair trade practices under LUTPA.
APPENDIX
Haydel‘s Sculpture
Haydel‘s Design Mark
Nola Spice‘s Jewelry